A case had been referred to the court as to the interpetation of the articles in the Directive. The court replied asking whether the subsequent Ansul judgement answered the questions raised.
Held: By agreement with the parties, only one of the . .
The test for confusion in Trade Marks context is wider than that for passing off. The use of a name which suggested manufacture in Switzerland when there was no connection with Switzerland, was misleading and deceptive and registration as trade mark was to be refused. Citations: Times 20-Jul-1998 Statutes: Trade Marks Act 1994 11 Jurisdiction: … Continue reading In Re ‘Swiss Miss’ Trademark: CA 20 Jul 1998
Application for registration without evidence of proprietary interest in the name. Citations: Ind Summary 28-Feb-1994 Statutes: Trade Marks Act 1938 17(1) Intellectual Property Updated: 08 May 2022; Ref: scu.83216
Lord Diplock said: ‘The common law of trade marks before 1875 The use by manufacturers of distinctive marks upon goods which they had made is of very ancient origin, but legal recognition of trade marks as a species of incorporeal property was first accorded by the Court of Chancery in the first half of the … Continue reading General Electric Co v General Electric Co Ltd; GE TM; Re GE Trade Mark: HL 1972
The court considered the nature of use in relation to goods under the 1994 Act, and the Directive: ‘It may well be that the concept of ‘use in relation to goods’ is different for differing purposes. Much may turn on the public conception of the use. For instance, if you buy Kodak film in Boots … Continue reading Euromarket Designs Inc v Peters and Trade and Barrel Ltd: ChD 25 Jul 2000
Where a sign or name had been used overwhelmingly with a descriptive or technical function, it was not validly registered as a trade mark. Name used in relevant public as an indicator of type not a designator of origin. Citations: Times 18-Dec-1998 Statutes: Trade Marks Act 1994 3 Intellectual Property Updated: 08 April 2022; Ref: … Continue reading In Re Trade Mark No 2,023,949: ChD 18 Dec 1998
An application to register a shape as a trade mark, on the basis of the shape only and without association with any other indication, would fail unless some particular element of the shape was driven by more than the need to produce a technical effect. Where an association with a particular shape with the applicant … Continue reading In Re Dualit Trade Mark; Dualit (Toaster Shapes): ChD 19 Jul 1999
The Reef pop group applied to register ‘REEF’ for Classes 25 and 26 – e.g. T-shirts, badges, etc. South Cone opposed them as registered proprietors of ‘Reef Brazil’ for the footwear which also was included in Class 25. South’s reputation was primarily amongst surfers. The Hearing Officer conducted a ‘multi-factorial’ comparison, and rejected the opposition … Continue reading Bessant and others v South Cone Incorporated; in re REEF Trade Mark: CA 28 May 2002
The defendant alleged that the offence of which had been convicted, under the 1994 Act, infringed his rights under article 6.2 in reversing the burden of proof. Held: The principle that the duty of proof lay on the prosecution was subject to statutory exceptions. To place a legal (persuasive) burden of proof on the defendant … Continue reading Regina v S (Trade Mark Defence) (Roger Sliney v London Borough of Havering): CACD 20 Nov 2002
[2014] UKIntelP o08014 Bailii Trade Marks Act 1994 England and Wales Intellectual Property Updated: 02 December 2021; Ref: scu.523940
[2013] UKIntelP o24313 Bailii Trade Marks Act 1994 592)(b) Intellectual Property Updated: 23 November 2021; Ref: scu.517126
[2014] UKIntelP o28514 Bailii Trade Marks Act 1994 England and Wales Intellectual Property Updated: 12 November 2021; Ref: scu.534587
Mark use in search engine was infringing use The claimant mark owner alleged that the defendant, in paying a search engine to use the claimants mark as a search keyword was infringing its rights. The defendant argued that the use of the same sign in different contexts could amount to a different and non-infringing use. … Continue reading Interflora Inc and Another v Marks and Spencer Plc and Another: ChD 21 May 2013
(New Zealand) The plaintiff, an MP, pursued a defamation case. The defendant wished to argue for the truth of what was said, and sought to base his argument on things said in Parliament. The plaintiff responded that this would be a breach of Parliamentary privilege. Held: A Defendant may not use libel proceedings to impugn … Continue reading Prebble v Television New Zealand Ltd: PC 27 Jun 1994
IPO Ex Parte. . .
An award of damages for misrepresentation required that there had at some time been a right of rescission, not necessarily a continuing right to rescind.
An acknowledgement of non-reliance clause has become a common part of modern commercial . .
IPO Trade Mark: Revocation – no use made of the mark by owner. . .
Trade Mark: Rectification . .
The Hearing Officer commented upon the stylization of the mark as advertised – with a lowercase ‘i’ and noted that this appeared to be at odds with the mark depicted on the application form. However, nothing turned on this point and he treated the . .
Trade Mark: Invalidity – allegation that Mark registered here by person faseley purporting to be the agent of the mark holder in the US. . .
Opposition – existing similar mark . .
Interlocutory Hearing in relation to a request by the Applicant for Security of Costs . .
IPO Trade Mark: Opposition – The application was in respect of ‘Eau de toilette, perfume, deodorant’. The opposition was based on registrations of a number of WITCH marks including WITCH DOCTOR and WITCH STIK.
IPO There has been a long running dispute between these two party’s dating back to the early 1980’s. The mark in suit was applied for on 28 June 1989 and was opposed by the current applicant all the way to the . .
At first instance (see BL O/099/06) the application had failed because the applicants had not provided evidence of use of the mark relied on. Following an appeal to the Appointed Person the matter had been remitted to the Registrar for further . .
Interlocutory Hearing re the filing of part of Form 8, Counterstatement and exhibits by way of email
Result
Incomplete documents filed in defence of registration by email: Appeal allowed. Registered Proprietor allowed to defend its . .
IPO Section 3(6): – Opposition failed.
Section 5(2)(b): – Opposition failed.
Section 5(3): – Opposition failed.
Section 5(4)(a): – Opposition failed.
1. Admission of additional evidence. . .
1. Statement of grounds of opposition : scope of the attack.
2. Amendment of pleadings; inherent jurisdiction to allow.
In dealing with the opposition to this application (see BL O/367/04) the Hearing Officer questioned the scope of the . .
IPO Sections 1(1) and 3(1)(a): – Opposition failed.
Section 3(1)(b): – Opposition successful.
Section 3(1)(c): – Opposition failed.
Section 3(2)(c): – Not considered.
The opponent in this . .
IPO Sections 1(1) and 3(1)(2) – Opposition failed.
Section 3(1)(b) – Opposition successful.
Section 3(1)(c) – Opposition failed.
Section 1(1)(d) – Opposition failed.
Section 3(2)(c) – Not . .
IPO Sections 1(1) and 3(1)(a): – Opposition failed.
Section 3(1)(b): – Opposition successful.
Section 3(1)(c): – Opposition failed.
Section 3(2)(c): – Not considered.
The opponent in this . .
IPO Sections 1(1) and 3(1)(a): – Opposition failed.
Section 3(1)(b): – Opposition successful.
Section 3(2)(c): Not considered.
The opponent in this case is a German manufacturer of confectionary . .
IPO Request for ‘striking out’: – Request refused. – 1. The Hearing Officer concluded that the Agreement between the parties had been reached on the basis of their trading arrangements at that time and there was . .
IPO Revocation. 1. Partial surrender of registration; effective date.
2. Rule 68(7) : failure to file TM8 rectified as a correction of an irregularity in or before the Office.
At the outset of . .
IPO This was an appeal from the Hearing Officer’s decision of 2 April; 2003 (BL O/090/03) in which he decided that the provisions of Rule 13(6) of the Trade Marks Rules 2000 were mandatory and that the . .
PO Trade Marks – Inter Partes Decisions – Opposition – 2211189 . .
IPO Ex Parte. . .
IPO Ex Parte. . .
IPO Ex Parte. . .
IPO Trade Marks – Ex Parte Decisions . .
IPO Ex Parte. . .
IPO Ex Parte. . .
IPO Ex Parte. . .
IPO Ex Parte. . .
IPO Ex Parte. . .
IPO Ex Parte. . .
IPO Ex Parte. . .
IPO Ex Parte. . .
Objection that mark is customary within the trade. . .
IPO The Hearing Officer in the above proceedings found for Continental Shelf 128 Limited. (Decisions dated 17 October 2002 (BL O/424/02 and BL O/425/02). Ms Emanuel appealed to the Appointed Person. Subsequently, . .
IPO Three separate oppositions, not consolidated, but as same issues involved only one decision.
The opponents’ opposition was based on their ownership of registrations in Classes 9, 16, 35, 41 and 42 of . .
IPO Section 46(1)(a): – Revocation failed.
Section 46(1)(b): – Revocation successful.
1. The Hearing Officer had to decide whether watches made of gold and/or incorporating precious stones were items . .
IPO Section 46(1)(a) – Partial Revocation failed
Section 46(1)(b) – Partial Revocation action (partially successful)
The above registered mark was registered for a range of goods in Class 9 and the . .
IPO The opponent in these proceedings commenced to design and trade in clothing under the name EMANUEL about 1977. A shop was opened in Chelsea in 1986 but due to the breakdown of her marriage the shop closed in . .
IPO In the parallel opposition proceedings (BL O/024/02) which has been reviewed in some detail the Hearing Officer concluded that as Ms Emanuel had assigned rights in this mark together with the goodwill in the . .
Section 3(6) – Opposition succeeded
Section 5(2)(b) – Opposition succeeded against the applicants Class 33 application.
Proprietorship: There must be a proprietor in existence at the date of application.
The opponents owned . .
Section 5(2)(b): Opposition partially successful in respect of Class 12 goods. Section 5(3): Opposition failed. Section 5(4)(a): Opposition failed. Section 56: Opposition failed.
The opponent relied on a number of prior registrations but these . .
ICO Section 5(2)(b): Invalidity action failed. Section 5(3): Invalidity action failed
Section 5(4)(a): Invalidity action failed. Section 56(2): Invalidity action failed
The applicant in these . .
. .
IPO Opposition based on opponent’s registration of a TWIN CHEF device mark in Class 30. The opposition related to the same application under consideration in SRIS O/186/01, and the opponent relied on largely the . .
IPO Opposition based on opponent’s various registrations (Community and UK) of a TWIN CHEFS device mark in Classes 29, 30 and 32. In regard to opposition under Section 5(2)(b), the Hearing Officer accepted that . .
IPO Appeals to the Appointed Person Decisions – Trade Marks . .
cw Inter Partes Decisions – Trade Marks – Opposition – The opponents filed evidence to say that they had first commenced to use the mark WACKERS from 1993 and goods (a game known as ‘Pogs’) were sold in the USA . .
The applicants sought revocation of the defendant’s trade marks on the grounds that they had not been implemented after five years. It was sensible to go straight from the Directive, rather than the Act which implemented it. The onus was on the . .
Applications for trade marks on behalf of the claimant had been rejected. Acquired distinctiveness was a significant issue, and the question of whether the appeal was a review or a rehearing was significant. In this appeal, the parties had given . .
The claimant said that the defendant had infriged its rights by the use of its logo on their publications. . .
An action was begun opposing a trade mark. It was conducted under the old rules, which did not allow for an order for discovery. After the new rules came into effect, discovery was sought, but the registrar said the old rules would continue to apply . .
IPO The opponent in these proceedings claims to have used the mark ZAM-BUK for ten years prior to the filing of the application in suit. The background to the proceedings is as follows.
ZAM-BUK is a . .
The applicant had been an employee of the objector at their nightclub ‘Chinawhite’ and whose principal attraction was a cocktail of the same name. Employees signed a confidentiality agreement as to the recipe. Having left the employment, the . .
The applicants sought registration of the trade mark ‘Reef’ in connection with merchandising activities in classes 25 and 26 arising from their pop group of the same name. The challengers owned a trade mark ‘Reef Brazil’ in class 25 in relation to . .
A business had grown, but the two founders split, and set up separate business. There was no agreement as to the use of the trading names and trade marks. The original law of Trade Marks prohibited bare exclusive licenses, licences excluding the . .
IPO The applicants were proprietors of the Community Trade Mark ‘@@XL pharma’, registered in Classes 3, 5, and 42. The Hearing Officer found that the goods were similar. Both marks had a distinctive character. . .
The shape of a bottle, and patterns impressed on it, were insufficiently distinctive to be registerable as Trade Marks. The distinctiveness is assessed by reference to the object alone, not by reference to the marketing activity surrounding it. . .
References: [2006] UKIntelP o22406 Links: Bailii Coram: Mrs J Pike ICO Section 5(2)(b): Invalidity action failed. Section 5(3): Invalidity action failed Section 5(4)(a): Invalidity action failed. Section 56(2): Invalidity action failed The applicant in these proceedings is the owner of a number of registered marks (UK & CTM) such as TOYS’R’US, MUMS’R’US, BABIES’R’US, ‘R’US etc … Continue reading Windows ‘R’ Us (Trade Mark: Inter Partes): IPO 8 Aug 2006
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The Trade Marks Act 1994 must, so far as possible, be interpreted in accordance with the Directive, and the relevant provisions of the Directive conform to those of the Regulation. Kitchin J summarised the principles to be applied when testing for . .
The court examined the development of the law in relation to comparative advertising. Jacob J said: ‘Prior to the coming into force of the Trade Marks Act 1994 comparative advertising using a registered trade mark of a competitor was, subject to . .
The claimants owned a major brand mark used in the distribution of tea. The defendants operated in the sale of kitchen equipment. Whether a sign infringed a mark without due cause was to be resolved at trial by the judge on the facts. The infringer had to show that he had good cause for his … Continue reading Premier Brands Uk Ltd v Typhoon Europe Ltd: ChD 3 Feb 2000
The word ‘Premier’ although devoid of distinctive character in itself, but having been registered as a trade mark, had acquired a sufficient distinctiveness to justify and found an action for infringement and passing off. The test was whether through use of the trademark, a sufficient number both of potential purchasers of the claimants goods, and … Continue reading Premier Luggage and Bags Ltd v Premier Company (Uk) Ltd and Another: ChD 17 Oct 2000
It was no defence to an action for trade mark infringement to assert that although the registration covered activities of the type undertaken, the claimant did not actually provide services of that precise type. It is in the nature of such registrations that they reserve to the mark holder the right to develop his activities … Continue reading Discovery Communications Inc v Discovery Fm Ltd: IHCS 25 Jan 2000
The procedure for applying for the registration of a European Trade Mark did not involve the same issues as applied in England as to the use of the mark within the first five years, nor any statement of a bona fide intention to use the mark. Only exceptionally therefore could a European Trade Mark be … Continue reading Decon Laboratories Ltd v Fred Baker Scientific Ltd and Another: ChD 28 Feb 2001
Registered trade mark name was properly included in the title of a book about the name holder. Citations: Times 20-Nov-1995 Statutes: Trade Marks Act 1994 11-2-b Intellectual Property Updated: 18 May 2022; Ref: scu.78564
A party complaining about the use of a trade mark in a comparative advert is required to show some dishonesty. Section 10(6) of the Act was described as ‘home grown’ rather than derived directly from the Directive. Judges: Laddiie J Citations: Times 08-Feb-1996, [1996] RPC 307 Statutes: Trade Marks Act 1994 10(6) Cited by: Cited … Continue reading Barclays Bank Plc v RBS Advanta: ChD 8 Feb 1996
Judges: Arnold J Citations: [2018] EWHC 3226 (Ch) Links: Bailii Statutes: Trade Marks Rules 2008, Trade Marks Act 1994 74(b) Jurisdiction: England and Wales Intellectual Property Updated: 18 May 2022; Ref: scu.631375
PO Revocation Judges: Mr D Landau Citations: NO 82663, O-237-08 Links: IPO Statutes: Trade Marks Act 1994 Intellectual Property Updated: 18 May 2022; Ref: scu.273218
The defendant had sold memorabilia using the claimant’s name, and marks for thirty years. He sought to make it clear that the products were not sourced from the club. They were purchased, generally, by people who wore them as badges of allegiance to the club. The claim of passing off failed because the club had … Continue reading Arsenal Football Club Plc v Reed: ChD 6 Apr 2001
Old Trade Mark infringement cases are to be viewed only with great care; on balance of convenience, the use of trade marked place name is to be allowed. Citations: Times 09-Dec-1997 Statutes: Trade Marks Act 1994 11(2)(b) Jurisdiction: Scotland Intellectual Property, Scotland Updated: 17 May 2022; Ref: scu.77754
Laws LJ: ‘Section 92(5) affords a positive and specific defence as to the use of the trade mark by the defendant. It does not provide a general defence of good faith … It seems to us that the provisions contained in section 92 have been devised to constitute a rigorous statutory code, involving offences initially … Continue reading Regina v McCrudden: CACD 2005
PO Trade Marks – Appeals to the Appointed Person Decisions – Application No: 2000169 Judges: Mr Hobbs Qc Citations: 2,000,169 Links: PO Statutes: Trade Marks Act 1994 Intellectual Property Updated: 16 May 2022; Ref: scu.192904
IPO Appointed Person. Judges: Mr S Thorley QC Citations: 2183690, 2200534 Links: IPO Statutes: Trade Marks Act 1994 Citing: See Also – Every Idea Safely Delivered (Trade Mark: Ex Parte) O-380-99 IPO 15-Oct-1999 cw Ex Parte Decisions – Trade Marks IPO Ex Parte. . . Lists of cited by and citing cases may be incomplete. … Continue reading Mark: EVERY IDEA SAFELY DELIVERED: TMR 29 Nov 2000
It is possible to grant two identical trade marks in respect of beer where either there was no confusion, or an honest concurrent use could justify such double registrations. Citations: Times 20-May-1998 Statutes: Trade Marks Act 1994 11 12(2) Cited by: Appeal from – Anheuser-Busch Inc v Budejovicky Bodvar Narodni Podnik; Budejovicky Bodvar Narodni Podnik … Continue reading Anheuser-Busch Inc v Budejovicky Budvar Narodni Podnik; Budejovicky Budvar Narodni Podnik v Anheuser Busch Inc: ChD 20 May 1998
Judges: Lord Justice Coulson Lady Justice Nicola Davies And Lord Justice Birss Citations: [2022] EWCA Civ 594 Links: Bailii Statutes: Trade Marks Act 1994 46 Jurisdiction: England and Wales Intellectual Property Updated: 13 May 2022; Ref: scu.676997
cw Inter Partes Decisions – Trade Marks – Opposition Judges: Mr M Knight Citations: OPP 48009 / 48010 / 48011 Links: PO Statutes: Trade Marks Act 1994 Intellectual Property Updated: 12 May 2022; Ref: scu.175836
The name ‘Elvis Presley’ was not of itself sufficiently distinctive to justify registration as a trade mark, being neither adapted to distinguish any particular goods nor capable of distinguishing them. Citations: Gazette 19-May-1999 Statutes: Trade Marks Act 1994 Jurisdiction: England and Wales Intellectual Property Updated: 11 May 2022; Ref: scu.85762
The name ‘Elvis Presley’ was not of itself sufficiently distinctive to justify registration as a trade mark, being neither adapted to distinguish any particular goods nor capable of distinguishing them. Citations: Times 22-Mar-1999 Statutes: Trade Marks Act 1994 Jurisdiction: England and Wales Intellectual Property Updated: 10 May 2022; Ref: scu.81866
Old contract clearly licensing use of Trade Mark name created a continuing right to use the name and was not now to be restrained by Trade Marks legislation. Citations: Times 01-Jun-1998 Statutes: Trade Marks Act 1994 Jurisdiction: England and Wales Intellectual Property Updated: 10 May 2022; Ref: scu.81263
IPO Ex Parte. Judges: Mr A James Citations: 1577271, 1577275 Links: IPO Statutes: Trade Marks Act 1994 Cited by: See Also – Mark: (SHAPE) CUSHION (No 2) TMR 18-Aug-1998 IPO Ex Parte. . . Lists of cited by and citing cases may be incomplete. Intellectual Property Updated: 10 May 2022; Ref: scu.276061
The court set out the applicable legal principles in trade mark infringement. The court considered the elements necessary to establish a defence under s10(6): The primary objective of section 10(6) of the 1996 Act is to permit comparative advertising . . As long as the use of a competitor’s mark is honest, there is nothing … Continue reading Cable and Wireless plc v British Telecommunications plc: ChD 1998
One of two project developers registered a Trade Mark constituting the name of the proposed development in his own name. The assets were, as always intended, later transferred into the limited company, and the two developers were directors. It was held that company name could not be divorced entirely from its trading name, and the … Continue reading Jonathan Ball, McDermot Will and Emery(A Firm) v The Eden Project Ltd, The Eden Trust: PatC 11 Apr 2001
